The Complainant is Bayerische Motoren Werke AG of Munich, Germany, represented by Kelly IP, LLP, United States of America.
The Respondent is David Weiss, Weiss Ent of Danville, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2017. On November 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 5, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 14, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 4, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 7, 2017.
The Center appointed Luiz E. Montaury Pimenta as the sole panelist in this matter on December 18, 2017. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is a corporation dating back from 1917 specialized in the manufacturing of automobiles and motorcycles, being known as one of the most successful companies in the world in said field of activity.
The Complainant does business worldwide, and its headquarters are located in Germany.
The Complainant owns the trademark, service mark, and trade name BMW, which is used in connection with its products and services, consisting mainly of Complaint’s automobiles and motorcycles manufactured, including for example the United States of America trademark BMW with registration number 0611710 registered on September 6, 1955.
The Complainant owns and operates the domain names , , as well as other region oriented domain names such as . The Complainant also licenses and authorizes its partners and authorized dealers to use its BMW mark as part of their business, trade name or domain names.
One of the Complainant’s authorized dealers in California uses the trade name Peter Pan BMW and the corresponding domain name , which was registered in 1996 and it is in use from at least as early as 1998 to present.
The disputed domain name was registered on November 30, 2016. 5. Parties’ Contentions A. Complainant
The Complainant states that:
- The disputed domain name is confusingly similar to its BMW mark, containing the Complainant’s mark in its entirety;
- Its BMW mark is well known around the world as well as is dully registered in the United States of America, the country in which the Respondent lives in, according to the disputed domain’s WhoIs data;
- The disputed domain name not only contains the Complainant’s mark in its entirety but also incorporates the term “Peter Pan” used by one of the Complainant’s authorized dealers in the United States of America, namely Peter Pan BMW;
- The Respondent has no rights or legitimate interests in the disputed domain name, as it has not been nor is currently commonly known by the disputed domain name. Additionally, the Respondent is not a licensee of the Complainant or otherwise authorized to use the Complainant’s BMW mark;
- The Respondent’s registration and use of the disputed domain name, which shows a website page with the phrase “Coming Soon” is analogous to non-use or “passive holding”, which does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the domain name;
- The Respondent’s registration and use of the disputed domain name is considered bad faith under the UDRP and prior UDRP decisions, as the Respondent uses it to intentionally attract Internet users by creating a likelihood of confusion with the Complainant’s famous and registered BMW mark;
- The Respondent disrupts the Complainant’s business by using the disputed domain name to compete with Complainant for Internet traffic by interfering with the Complainant’s ability to control use of its federally registered BMW mark.
- The Respondent’s bad faith is clear in the fact that the disputed domain name is undoubtedly similar to the Complainant’s mark, official domain name and the Complainant’s authorized dealer, Peter Pan BMW.
- The Respondent was formerly employed by BMW of Fremont and East Bay BMW.
Finally, the Complainant requests that the disputed domain name be transferred to Bayerische Motoren Werke AG (BMW). B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no right or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar
According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Panel finds that the Complainant has proven to be the holder of numerous trademark registrations throughout the world consisting of the BMW sign. In fact, the Complainant’s mark enjoys a wide reputation, with presence in numerous countries, having its reputation proven by previous UDRP panels. (See Bayerische Motoren Werke AG and Williams Grand Prix Engineering Limited v. Neil Malkhandi,WIPO Case No. D2000-1172; Bayerische Motoren Werke AG v. Whois privacy services provided by DomainProtect LLC / N.a, Vlad Chernov,WIPO Case No. D2013-0452;
It is well established in previous UDRP decisions that, where the disputed domain name incorporates a complainant’s registered trademark, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525.
In the present case, the disputed domain name incorporates the Complainant’s trademark along with the name “Peter Pan” that identifies the Complainant’s authorized dealer, namely, Peter Pan BMW.
The mere addition of the generic Top-Level Domain (gTLD) “.com” to the disputed domain name does not prevent a finding of confusing similarity. Its use is purely for Internet technical registration purposes. See The Coca-Cola Company v. David Jurkiewicz,WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc.,WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; and Aktiebolaget Electrolux v. Jose Manuel,WIPO Case No. D2010-2031.
Therefore, this Panel concludes that the Complainant has fulfilled with the first requirement under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in a domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed or permitted the Respondent to register or use the disputed domain name or to use its trademarks. Moreover, it is clear that the Complainant has prior rights in the trademarks which precede the Respondent’s registration of the disputed domain name.
Likewise, there is no evidence in the record to demonstrate that the Respondent is commonly known by the disputed domain name.
The Panel agrees that the use of the disputed domain name in connection with a “coming soon” website is analogous to non-use or passive holding, which does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to rebut the Complainant’s contentions. (see Croatia Airlines d.d. v. Modern Empire Internet Ltd,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
The Respondent has failed to show that it has acquired any trademark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services.
Accordingly, the Panel considers that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Complainant must prove both that the disputed domain name was registered in bad faith and it is being used in bad faith.
In the present case, the Panel agrees that the Respondent was aware of the Complainant’s rights and the Complainant’s authorized, long-term, Californian-based dealer Peter Pan BMW by the time it registered the disputed domain name, not only given the fame of the Complainant’s BMW marks, but also because the Respondent was formerly employed by BMW of Fremont and East Bay BMW (which is also located in the San Francisco area) prior to registering the disputed domain name.
It is also clear that the Respondent registered the disputed domain name in November 2016, long after Complainant’s mark became internationally famous and long after the Complainant’s authorized dealer began using its trade name Peter Pan BMW and corresponding domain name .
Furthermore, many prior UDRP panels found that unauthorized registration of a well-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements (see Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; PepsiCo, Inc. v. “null”, aka Alexander Zhavoronkov, WIPO-Case-No. D2002-0562; Pepsico, Inc. v. Domain Admin,WIPO Case No. D2006-0435; PepsiCo, Inc. v. PEPSI, SRL and EMS COMPUTER INDUSTRY,WIPO Case No. D2003-0696; Audi AG, Volkswagen Group of America, Inc. v. Sandlot LLC, Jim Gossett,WIPO Case No. D2008-1053).
Additionally, the Panel agrees that the registration and use of the disputed domain name disrupts the Complainant’s business, as it is intended to attract and divert Internet users searching for the Complainant’s authorized dealer Peter Pan BMW. Thus, even though the Respondent is not a competitor of the Complainant, the registration and use of the disputed domain name disrupts the Complainant’s business and can be interpreted as bad faith.
Finally, as mentioned above, the Panel verifies that the disputed domain name does not resolve to a functioning website, but to a “coming soon” website, which can be analogous to non-use or passive holding and further evidence of bad faith registration and use under the Policy.
In light of the above and evidence provided by the Complainant, by registering the disputed domain name with clear knowledge of Complainant’s rights in the BMW mark and authorized dealer Peter Pan BMW, Respondent acted in bad faith.
Therefore, the Panel finds that the Complainant has established the third element of paragraph 4(a) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, be transferred to the Complainant.
Luiz E. Montaury Pimenta
Sole Panelist
Date: December, 28, 2017
Full & Egal Universal Law Academy